Mirpuri v CA
2049, the evidence of both parties were received by the Director
GR No 114508
Ponente: Puno, J.
DOCTRINE
A "trademark" is defined under R.A. 166, the Trademark Law, as including "any word,
name, symbol, emblem, sign or device or any combination thereof adopted and used
by a manufacturer or merchant to identify his goods and distinguish them from those
manufactured, sold or dealt in by others." This definition has been simplified in R.A. No.
8293, the Intellectual Property Code of the Philippines, which defines a "trademark" as
"any visible sign capable of distinguishing goods."
FACTS
On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of petitioner
Pribhdas J. Mirpuri, filed an application with the Bureau of Patents for the registration
of the trademark "Barbizon" for use in brassieres and ladies undergarments. Escobar
alleged that she had been manufacturing and selling these products under the firm
name "L & BM Commercial" since March 3, 1970.
Private respondent Barbizon Corporation, a corporation organized and doing business
under the laws of New York, U.S.A., opposed the application. It claimed that:
"The mark BARBIZON of respondent-applicant is confusingly similar to the trademark
BARBIZON which opposer owns and has not abandoned. That opposer will be
damaged by the registration of the mark BARBIZON and its business reputation and
goodwill will suffer great and irreparable injury. That the respondent-applicant's use of
the said mark BARBIZON which resembles the trademark used and owned by opposer,
constitutes an unlawful appropriation of a mark previously used in the Philippines and
not abandoned and therefore a statutory violation of Section 4 (d) of Republic Act No.
166, as amended."
On June 18, 1974, the Director of Patents rendered judgment dismissing the opposition
and giving due course to Escobar's application. This decision became final and on
September 11, 1974, Lolita Escobar was issued a certificate of registration for the
trademark "Barbizon." The trademark was "for use in "brassieres and lady's underwear
garments like panties."
Escobar later assigned all her rights and interest over the trademark to petitioner
Pribhdas J. Mirpuri who, under his firm name then, the "Bonito Enterprises," was the
sole and exclusive distributor of Escobar's "Barbizon" products. Escobar failed to file
with the Bureau of Patents the Affidavit of Use of the trademark required under Section
12 of Republic Act (R.A.) No. 166, the Philippine Trademark Law. Due to this failure,
the Bureau of Patents cancelled Escobar's certificate of registration.
On May 27, 1981, Escobar reapplied for registration of the cancelled trademark. Mirpuri
filed his own application for registration of Escobar's trademark. Escobar later assigned
her application to herein petitioner and this application was opposed by private
respondent. The case was docketed as Inter Partes Case No. 2049 (IPC No. 2049).
Replying to private respondent's opposition, petitioner raised the defense of res
judicata. On March 2, 1982, Escobar assigned to petitioner the use of the business
name "Barbizon International." Petitioner registered the name with the Department of
Trade and Industry (DTI) for which a certificate of registration was issued in 1987.
Forthwith, private respondent filed before the Office of Legal Affairs of the DTI a petition
for cancellation of petitioner's business name. On November 26, 1991, the DTI, Office
of Legal Affairs, cancelled petitioner's certificate of registration, and declared private
respondent the owner and prior user of the business name "Barbizon International."
Meanwhile, in IPC No.
of Patents. On June 18, 1992, the Director rendered a decision declaring private
respondent's opposition barred by res judicata and giving due course to petitioner's
application for registration.
Private respondent questioned this decision before the Court of Appeals. On April 30,
1993, the Court of Appeals reversed the Director of Patents finding that IPC No. 686
was not barred by judgment in IPC No. 2049 and ordered that the case be remanded
to the Bureau of Patents for further proceedings.
ISSUE
Whether or not petitioner is liable for trademark infringement
HELD
In the case at bar, private respondent anchors its cause of action on the first paragraph
of Article 6bis of the Paris Convention which reads as follows:
"Article 6bis
(1) The countries of the Union undertake, either administratively if their legislation so
permits, or at the request of an interested party, to refuse or to cancel the registration
and to prohibit the use, of a trademark which constitutes a reproduction, an imitation,
or a translation, liable to create confusion, of a mark considered by the competent
authority of the country of registration or use to be well-known in that country as being
already the mark of a person entitled to the benefits of this Convention and used for
identical or similar goods. These provisions shall also apply when the essential part of
the mark constitutes a reproduction of any such well-known mark or an imitation liable
to create confusion therewith.
(2) A period of at least five years from the date of registration shall be allowed for
seeking the cancellation of such a mark. The countries of the Union may provide for a
period within which the prohibition of use must be sought.
(3) No time limit shall be fixed for seeking the cancellation or the prohibition of the use
of marks registered or used in bad faith."
This Article governs protection of well-known trademarks. Under the first paragraph,
each country of the Union bound itself to undertake to refuse or cancel the registration,
and prohibit the use of a trademark which is a reproduction, imitation or translation, or
any essential part of which trademark constitutes a reproduction, liable to create
confusion, of a mark considered by the competent authority of the country where
protection is sought, to be well-known in the country as being already the mark of a
person entitled to the benefits of the Convention, and used for identical or similar goods.
The essential requirement under Article 6bis is that the trademark to be protected must
be "well-known" in the country where protection is sought. The power to determine
whether a trademark is well-known lies in the "competent authority of the country of
registration or use." This competent authority would be either the registering authority
if it has the power to decide this, or the courts of the country in question if the issue
comes before a court. IPC No. 2049 raised the issue of ownership of the trademark,
the first registration and use of the trademark in the United States and other countries,
and the international recognition and reputation of the trademark established by
extensive use and advertisement of private respondent's products for over forty years
here and abroad. These are different from the issues of confusing similarity and
damage in IPC No. 686. The issue of prior use may have been raised in IPC No. 686
but this claim was limited to prior use in the Philippines only. Prior use in IPC No. 2049
stems from private respondent's claim as originator of the word and symbol "Barbizon,"
as the first and registered user of the mark attached to its products which have been
sold and advertised worldwide for a considerable number of years prior to petitioner's
first application for registration of her trademark in the Philippines. Indeed, these are
substantial allegations that raised new issues and necessarily gave private respondent
a new cause of action. Res judicata does not apply to rights, claims or demands,
although growing out of the same subject matter, which constitute separate or distinct
causes of action and were not put in issue in the former action.

Respondent corporation also introduced in the second case a fact that did not exist at
the time the first case was filed and terminated. The cancellation of petitioner's
certificate of registration for failure to file the affidavit of use arose only after IPC No.
686. It did not and could not have occurred in the first case, and this gave respondent
another cause to oppose the second application. Res judicata extends only to facts and
conditions as they existed at the time judgment was rendered and to the legal rights
and relations of the parties fixed by the facts so determined. When new facts or
conditions intervene before the second suit, furnishing a new basis for the claims and
defenses of the parties, the issues are no longer the same, and the former judgment
cannot be pleaded as a bar to the subsequent action.

Intellectual and industrial property rights cases are not simple property cases.
Trademarks deal with the psychological function of symbols and the effect of these
symbols on the public at large. Trademarks play a significant role in communication,
commerce and trade, and serve valuable and interrelated business functions, both
nationally and internationally. For this reason, all agreements concerning industrial
property, like those on trademarks and tradenames, are intimately connected with
economic development. Industrial property encourages investments in new ideas and
inventions and stimulates creative efforts for the satisfaction of human needs. They
speed up transfer of technology and industrialization, and thereby bring about social
and economic progress. These advantages have been acknowledged by the Philippine
government itself. The Intellectual Property Code of the Philippines declares that "an
effective intellectual and industrial property system is vital to the development of
domestic and creative activity, facilitates transfer of technology, it attracts foreign
investments, and ensures market access for our products."